Parental Guide of Texas v. Thomson (Fed. Cir. 2006).
The most interesting aspect of this case is that the CAFC was willing to decide it. In a post-settlement dispute over damages, Parental Guide originally appealed to the Fifth Circuit. On motion, the Fifth Circuit transferred the case to the CAFC because the settlement agreement “expressly refers to the patent statute, 35 U.S.C. § 284.”
Because it was “at least plausible” that a determination of Section 284 would be necessary to decide the case, the appellate panel felt compelled to hear the appeal.
Sorry for sounding snarky. I didn’t mean to, but my comment certainly reads that way.
I pointed out the “most interesting aspect of the case.” But I agree that even this aspect is not that exciting.
I’m not sure what’ particularly interesting about it. As the Fed Circuit wins Christianson v. Colt, transfers between the Federal Circuit and the regional circuits aren’t supposed to be ping pong.
The full paragraph setting it up is as follows:
Under law of the case principles, if we, “the transferee court[,] can find the transfer decision plausible, [our] jurisdictional inquiry is at an end.” Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 818 (1988). We have jurisdiction over cases where patent law is a necessary element of one of the well-pleaded claims. Id. at 809. Because Parental Guide’s claim for breach of the Agreement requires determining what the parties meant by reference to section 284 of the patent statute, we find that the Fifth Circuit’s decision to transfer the case to this court is at least plausible, and our jurisdictional inquiry is at an end. Thus, we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
A Way for the Supreme Court to issue a Clean Ruling in AT&T v. Microsoft
I think the Federal Circuit, as well as the lawyers involved, missed the mark in the AT&T v. Microsoft and AT&T v. Eolas cases.
The issue there is damages, because Microsoft’s activities in the U.S. indisputably constitute infringement. It is also agreed by all, except Microsoft partisans, that MSFT should be liable to a just (= large) amount of damages.
The trick is how to get to this “just result.” The plaintiffs and the lower courts, including the Federal Circuit, thought that they have to somehow bring the millions of copies of the software “made and sold” overseas into the calculus, to arrive at the large damage amount.
They got themselves into all kinds of mess, and inconsistencies among the cases, regarding for example, what is a software “product” v. a method, what is “supplied,” extraterritoriality, etc. Particularly note that in Bayer v. Housey, “data is not product” thus can be imported free of the encumbrance of 35 U.S.C. § 271(g); but in the two MSFT cases, data (or some embodiment of it) are construed to be product that is prohibited by 35 U.S.C. § 271(f) from being exported. But data is data is data, regardless if it is recorded on a disk, or transmitted over the wires, or remembered in a person’s mind.
None of the messy scenarios were necessary, in my humble opinion. The courts only need to place a different value of that single, master copy of the Windows software exported by MSFT, and calculate damages from there. The plaintiff can even ask MSFT itself how it would put a price tag on that “original” copy. Of course, there are numerous methods the court could use for this valuation purpose.: cost of development, revenue to be generated from, etc.
Hopefully the Supreme Court, if and when it decides to rule on this case, can do it cleanly. Perhaps as suggested above.
to the tune of the Beverly Hillbillies:
There once was a case named “Holmes v. Vornado”,
the Supreme Court said the Fed Cir should only take the cases they ought to,
if a settlement damages dispute “arises under” 35 U.S.C.,
then I have a bridge in Brooklyn I’d like to sell to thee.
A Way for the Supreme Court to issue a Clean Ruling in AT&T v. Microsoft
I think the Federal Circuit, as well as the lawyers involved, missed the mark in the AT&T v. Microsoft and AT&T v. Eolas cases. The issue there is damages, because Microsoft’s activities in the U.S. indisputably constitute infringement. It is also agreed by all, except Microsoft partisans, that MSFT should be liable to a just (= large) amount of damages.
The trick is how to get to this “just result.” The plaintiffs and the lower courts, including the Federal Circuit, thought that they have to somehow bring the millions of copies of the software “made and sold” overseas into the calculus, to arrive at the large damage amount.
They got themselves into all kinds of mess, and inconsistencies among the cases, regarding for example, what is a software “product” v. a method, what is “supplied,” extraterritoriality, etc. Particularly note that in Bayer v. Housey, “data is not product” thus can be imported free of the encumbrance of 35 U.S.C. § 271(g); but in the two MSFT cases, data (or some embodiment of it) are construed to be product that is prohibited by 35 U.S.C. § 271(f) from being exported. But data is data is data, regardless if it is recorded on a disk, or transmitted over the wires, or remembered in a person’s mind.
None of the messy scenarios are necessary, in my humble opinion. The courts only need to place a different value of that single, master copy of the Windows software exported by MSFT, and calculate damages from there. The plaintiff can even ask MSFT itself how it would put a price tag on that “original” copy. Of course, there are numerous methods the court could use for this valuation purpose.: cost of development, revenue to be generated from, etc.
Hopefully the Supreme Court, if and when it decides to rule on this case, can do it cleanly. Perhaps as suggested above.
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